DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “latch configured to secure the at least one fixing means” (claim 4) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
In this case, “fixing means” will be interpreted to cover a screw or bolt. The disclosure gives no structure for “securing means” for the elected embodiment- the specification says “securing means can, for example, be a latch” or “a cover,” neither of which are part of the elected embodiment. For the purposes of this action, the “securing means” will be interpreted as anything that can “secure the fixing means in the fixing position.”
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 13 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 13 recites further limitations on a tensioning screw, however a tensioning screw is not required by parent claims 1 and 3. As such, it is unclear how the limitations to an unclaimed component affect the device as claimed.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3, 8-10, 12-14, 16-19, 21, 25 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Moltrup US 2020/0361580 alone, or alternately in view of Miller US 10,654,547.
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Figure 1- Moltrup Figure 1
Regarding claim 1, Moltrup teaches a foil arrangement for a water sports apparatus 10, comprising:
a fuselage configured to carry wings;
a board 12 including a receptacle 20 and a pocket;
a mast 14 having a first end configured to be fixed to the water sports apparatus and a second end, opposite the first end, that is detachably connected to the fuselage;
wherein the mast has a shoe 22 at the first end configured to be inserted in a force-fitting and/or form-fitting manner into the receptacle and to be fixed there in position by means of at least one fixing means 50,
wherein the fixing means has a handle 51/52, which plunges, in a fixing position, approximately flush into the board pocket when the shoe is connected to the mast.
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Figure 2- Moltrup Figures 2 and 3
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the mast-fuselage connection with a shoe and receptacle as taught for the mast-board connection in order to ensure that the apparatus can be further broken down for maintenance/component replacement or transportation.
In this case, Moltrup teaches that the handle 51 can be folded down into a notch in the receptacle 20. Alternatively, Moltrup teaches that “tightening shaft 54 is shaped like the trailing edge of the profile the joint 22 to improve the hydrodynamic profile of the floatable apparatus 10” [0086]. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to fit shaft 54 into a pocket as shown for handle 51 in order to fit the hydrodynamic profile of the apparatus.
In an alternative interpretation, Miller teaches a fin attachment system in which the fixing means comprises a rotary lever/handle 300 that sits flush in a pocket 112 (column 6, lines 1-6). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the fixing means pocket of Moltrup with a matching pocket for the lever as taught by Miller in order to provide the desired outer hydrodynamic envelope and reduce hydrodynamic drag.
Regarding claim 2, Moltrup alone or in view of Miller teaches the invention as claimed as detailed above with respect to claim 1. Moltrup also teaches that the shoe 22 and the receptacle 20 are butted in an insertion direction.
Regarding claim 3, Moltrup alone or in view of Miller teaches the invention as claimed as detailed above with respect to claim 1. Moltrup also teaches that the fixing means 50 is a tensioning screw, bolt or lever (see Moltrup figures 5C and 5D).
Regarding claim 8, Moltrup alone or in view of Miller teaches the invention as claimed as detailed above with respect to claim 1. Moltrup also teaches that the shoe 22 is insertable into the receptacle 20 by angling (see Moltrup figure 3).
Regarding claim 9, Moltrup alone or in view of Miller teaches the invention as claimed as detailed above with respect to claim 8. Moltrup also teaches a pivot bearing 32 which is fixed in the receptacle 20 and with which a counterpart (notch) is associated on the shoe 22, wherein the counterpart is designed such that the pivot bearing and the counterpart are engaged in a form-fitting and/or force-fitting manner in the fixing position.
Regarding claim 10, Moltrup alone or in view of Miller teaches the invention as claimed as detailed above with respect to claim 9. Moltrup also teaches that the pivot bearing has a pin 32, which is inserted into the receptacle 20 and which, in the fixing position, plunges into a recess (the center of the receptacle) and is engaged behind by the peripheral wall thereof.
Regarding claim 12, Moltrup alone or in view of Miller teaches the invention as claimed as detailed above with respect to claim 9. Moltrup also teaches that the fixing means 50 is formed on the downstream side at a distance from the pivot bearing 32 (Moltrup teaches that attachment 34 is at the rear of base 20, [0064-0065]). If applicant disagrees, then it would have been obvious to one having ordinary skill in the art at the time the invention was made to reverse the orientation of the connection in order to enable the desired assembly motion or load profile, since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167.
Regarding claim 13, Moltrup alone or in view of Miller teaches the invention as claimed as detailed above with respect to claim 3. Moltrup also teaches a tensioning screw 56, but does not teach fine thread. Moltrup does teach that fine thread can be used elsewhere in the device [0078]. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the tensioning screw with fine thread as taught for the alternative fixing means 51 in order to “ensure precise calibration of the locking means 50” [0078].
Regarding claim 14, Moltrup alone or in view of Miller teaches the invention as claimed as detailed above with respect to claim 1. Moltrup (and alternatively Miller) also teaches that the handle 51 is a rotary lever whose axis of rotation is coaxial with an axis of the fixing means.
Regarding claim 16, Moltrup alone or in view of Miller teaches the invention as claimed as detailed above with respect to claim 14. Moltrup does not explicitly teach that a peripheral wall of the pocket is formed approximately circularly corresponding to the area covered by the rotary lever during actuation, however it would have been an obvious matter of design choice to make the different portions of the pocket of whatever form or shape was desired or expedient, including circular to match the lever rotation in order to provide the desired clearance for use. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Alternatively, Miller teaches a fin attachment system in which the fixing means comprises a rotary lever 300 that sits flush in a pocket 112, wherein a peripheral wall of the pocket is formed approximately circularly corresponding to the area covered by the rotary lever during actuation. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the fixing means pocket of Moltrup with a matching pocket for the lever as taught by Miller in order to provide the desired outer hydrodynamic envelope.
Regarding claim 17, Moltrup alone or in view of Miller teaches the invention as claimed as detailed above with respect to claim 1. Moltrup also teaches that a depth of the pocket is approximately equal to a height of the rotary lever 51/52. In an alternate interpretation, it would have been an obvious matter of design choice to match the pocket and lever depth in order to best conceal the lever and maintain the hydrodynamic profile, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
In an alternative interpretation, Miller teaches a fin attachment system in which the fixing means comprises a rotary lever/handle 300 that sits flush in a pocket 112 (column 6, lines 1-6), indicating that a depth of the pocket is approximately equal to a height of the rotary lever. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the fixing means pocket of Moltrup with a matching pocket for the lever as taught by Miller in order to provide the desired outer hydrodynamic envelope and reduce hydrodynamic drag.
Regarding claim 18, Moltrup alone or in view of Miller teaches the invention as claimed as detailed above with respect to claim 14. Moltrup does not explicitly teach that a circumference of the rotary lever is rounded according to the radius of the pocket, however it would have been an obvious matter of design choice to make the different portions of the pocket and lever of whatever form or shape was desired or expedient, including matching in order to provide the desired fit to maintain the hydrodynamic profile. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
In an alternative interpretation, Miller teaches a fin attachment system in which the fixing means comprises a rotary lever 300 that sits flush in a pocket 112, wherein a circumference of the rotary lever is rounded according to the radius of the pocket. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the fixing means pocket of Moltrup with a matching pocket for the lever as taught by Miller in order to provide the desired outer hydrodynamic envelope.
Regarding claim 19, Moltrup alone or in view of Miller teaches the invention as claimed as detailed above with respect to claim 1. Moltrup also teaches a tool attachment on the handle- please note that without any recited physical limitations, a pair of pliers could attach anywhere on the handle.
Regarding claim 21, Moltrup alone or in view of Miller teaches the invention as claimed as detailed above with respect to claim 1. Moltrup does not teach that the mast 14 and the shoe 22 are formed integrally, however it would have been obvious to one having ordinary skill in the art at the time the invention was made to form the mast and show together in order to reduce part count or strengthen the device, since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1893).
Regarding claim 25, Moltrup alone or in view of Miller teaches the invention as claimed as detailed above with respect to claim 1. Moltrup also teaches a frontwing and a rearwing are held on the fuselage (see Moltrup Figure 1).
Regarding claim 26, Moltrup alone or in view of Miller teaches the invention as claimed as detailed above with respect to claim 1. As modified, the handle 51 does not protrude out of the fuselage pocket when the handle is in the fixing position (as it is flush).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Moltrup US 2020/0361580 in view of Geller US 4,805,546, and alternately also in view of Miller US 10,654,547.
Regarding claim 4, Moltrup alone or in view of Miller teaches the invention as claimed as detailed above with respect to claim 1. Moltrup does not teach a latch configured to secure the at least one fixing means in the fixing position. Geller teaches a fin securing mechanism comprising a latch 42, 44 configured to secure a handle/lever arm 30 in the desired position. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the fixing means pocket of Moltrup with latch notches for the handle as taught by Gellar in order to ensure the handle remains in the desired position.
Claims 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Moltrup US 2020/0361580 in view of Sommerlatt US 11,345,449, and alternately also in view of Miller US 10,654,547.
Regarding claim 22, Moltrup alone or in view of Miller teaches the invention as claimed as detailed above with respect to claim 1. Moltrup also teaches that upstream and downstream regions of the mast are tapered or rounded and this taper or rounding extends into the receiving pocket (see Moltrup figure 2), but does not teach details of the connection between the mast and shoe. Sommerlatt teaches a mast-fuselage connection for a hydrofoil board in which the mast 2 is inserted with at least one end section into a receiving pocket of the fuselage 8 on the water-sports-apparatus-side or on the fuselage-side, wherein upstream 3 and downstream 4 regions of the mast are tapered or rounded and this taper or rounding extends into the receiving pocket 14, into which an intermediate piece 13 is inserted which fills a space between the peripheral wall of the receiving pocket and the end portion of the mast. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify mast-shoe connection of Moltrup with an insert as taught by Sommerlatt in order to strengthen the connection and better distribute loads.
Regarding claim 23, Moltrup and Sommerlatt, together or also in view of Miller teach the invention as claimed as detailed above with respect to claim 22. Sommerlatt also teaches that the intermediate piece 13 is made of plastic. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify mast-shoe connection of Moltrup with a plastic insert as taught by Sommerlatt in order to avoid direct contact between the mast and fuselage/shoe (column 7, lines 7-27).
Regarding claim 24, Moltrup and Sommerlatt, together or also in view of Miller teach the invention as claimed as detailed above with respect to claim 22. Sommerlatt also teaches that the intermediate piece 13 has a bottom wall on which the end portion of the mast 2 rests (see Sommerlatt figure 2).
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Moltrup US 2020/0361580 in view of Hendricks US 7,144,285, and alternately also in view of Miller US 10,654,547.
Regarding claim 27, Moltrup alone or in view of Miller teaches the invention as claimed as detailed above with respect to claim 1. Moltrup does not teach that the receptacle is open at the top side of the fuselage and the pocket is open at the bottom side of the fuselage. Hendricks teaches a foil arrangement in which a hydrofoil 14 is attached to a board 13 via a mast 28, wherein the hydrofoil comprises a receptacle 31 for the shoe 29 of the mast, and a pocket 34 for a fixing means, wherein the hydrofoil defines a top side and a bottom side, the receptacle is open at the top side, and the pocket is open at the bottom side. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify mast-shoe connection of Moltrup with the fixing means on the opposite side of the foil/fuselage as taught by Hendricks in order to obtain a more rigid “sandwiched” engagement and/or make the fastening means easier to access when the watersports apparatus is resting upside down.
Response to Arguments
Applicant's arguments filed 1/27/26 have been fully considered but they are not persuasive.
The applicant argues that 112(b) rejections should be withdrawn, but does not identify which rejections or provide any arguments outside of “one of ordinary skill in the art would have understood what was being claimed” (page 8). As such, there is nothing to which the examiner can respond.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the applicant argues that “the Office Action failed to show that one of skill in the art would have desired a three-part assembly” (page 10). The examiner responds that Moltrup’s board, mast and fuselage assembly is already three parts. The modification being proposed is to make the mast-to-fuselage interface a quick-release connection like that taught for the mast-to-board interface. As stated in the action, one of ordinary skill in the art would understand the utility of such a setup, including the ability to quickly change or replace more components, or disassemble the arrangement into more pieces for easier transportation.
In response to the applicant’s argument that Moltrup does not teach that the handle can rest approximately flush in the fuselage pocket, please see above. Moltrup teaches that the handle can fold down approximately flush into a notch on the receptacle, which can be interpreted as a fuselage pocket. However, in light of the newly amended claims an alternative rejection has also been made in view of Miller, which teaches that a fixing knob can comprise “a foldable wing-type nut which can be unfolded from a position flush or almost flush to an outer fin surface, then turned by a user to turn the knob, and then refolded” (column 6, lines 1-6), teaching the claim as written.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Marc Burgess whose telephone number is (571)272-9385. The examiner can normally be reached M-F 08:30-15:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marc Jimenez can be reached at 517 272-4530. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARC BURGESS/Primary Patent Examiner, Art Unit 3615